January 14, 2008

The Perils of Prosecution

With
proclivity to despotic rule-making, USPTO management has issued edict to trash examination to the lowest common denominator.
Playing the numbers to demonstrate its toughness, top management determination was to sink
the allowance rate. Many moons ago, anticipating outcry at examination
injustice, the agency geared up for a ramp in appeals. Outrageous incompetence
is in full flower at the PTO. The governmental agency representing the
sanctity of invention has been so corrupted as to soil itself in disgrace; in doing so, pointing out the woeful
neglect of its overseers.

Prosecutors across the country are
facing ridiculous rejections founded upon examiner ignorance and mendacious
mischaracterization, requiring meticulous explanation of the foundations upon which the
claimed invention are based, to have any hope of securing a patent grant. The
best analogy is the lip service the criminal justice system puts to "innocent
until proven guilty," which actually works as "guilty until proven innocent."

Increasingly, basic science and technology must be explained to argue away
from wrongheaded assertion by an examiner. A prosecutor observed: "The other
thing I'm seeing is examiners making unsupported arguments of their own re:
inherency, and improperly shifting the burden of proof to the applicant,
essentially requiring us to prove a negative. Point it out, and they won't back
off." Stubborn denial of fact is getting to be an examiner hallmark.

Examination on the merits is increasingly seeming a mirage. As it is now, the odds seem badly stacked.
Nominally, specific technical arguments to overcome rejection are the formula
for allowance. But widespread experience is that stubborn insistence on examiner
concoction, irrespective of the facts, has become the norm. One prosecutor commented,
"It's been my experience (lately) that the examiners either don't understand the
technical arguments (my field is chemistry) or don't want to deal with them at
all." Patent Hawk, prosecuting in the software field, is finding examiners that
granted patents a year ago are coming back on continuations with trumped-up
silliness for rejection, necessitating appeal. In one instance, an examiner takes
to appeal prior art that does exactly the opposite of the claimed invention.

These are not isolated reports. Anecdotal evidence keeps pouring in.
In Re Sullivan
this past summer, the CAFC had to reprimand the BPAI for refusing to consider
evidence. The agency is counting on the fact that few can afford to have the
court of appeals address injustice meted out in denying deserved allowance.

Examiners didn't spontaneously start being stupid curmudgeons en masse.
Reducing the allowance rate, regardless of merit, emanates by direction from top
management. Craven to perceived political wind of granting junk patents, facing
increasing pendency without prospect of beefing up the examiner corps, the
contrived solution is to ameliorate "the problem" by making it go away: deny
allowance, regardless of merit. At this juncture, a competent examiner that
insists on examining on the merits is a rarity.

Further, to really make the problem go away, limit continuations. The reflex
reaction by a prosecutor to being unjustly thumped by the appeals board is to
file a continuation. Craven but cunning in its examination limits rules,
embattled agency leadership
is now
struggling mightily to foreclose the option of unlimited continuations.

Erstwhile examiner Jordan Kuhn opines on the wellspring of examiner
complicity and the root cause:

In part, lack of pride - that is, an examiner’s lack
of pride in the work they perform. Examiners, fresh off the college boat,
often know very little about the patent system and its rich history. What
has changed from before? Hiring rates are at an all time high as the PTO
desperately attempts to decrease pendency, while PTO salaries are not
competitive. The result: an examiner hiring process that works like a border
fence; those who want to get through, will. Respect was once justly given to
patent examiners who assured that the patent system functioned properly.
With decreased respect for the PTO, respect for examiners has declined as
well. With salaries below industry standards and job prestige constantly
sagging, it is no surprise that the applicants that actually choose to
become examiners must be constantly re-taught the basics of technology and
patent examination.

But
the culprit is upper management. They analyzed what they viewed the problem
at hand: public perception of increasing allowance rates equivalent to
granting junk patents. Their solution was to decrease allowance rates in the
cheapest way possible: deny, deny, deny. Maybe allowance rates should be
lower than they were a few years back; that is impossible to know. One
certainty: pursuing a training program that focuses on the rejection of
patent applications instead of focusing on granting of valid patents is
antithetical to adequate allowance rates.

Pride must be instilled in the examiner corps from day one. Examiners must
leave the training academy with an urgency to perform a public service and
grant valid patents. Examiners must be given more time to perform adequate
prior art search and analysis as bases for proper rejection; rejection based
on merit, not pressure to deny with an eye to numeric goal.

Basic management
ineptitude coupled with wrong-headed training are the sources of the present
examination debacle.

The solution is ultimately political - heads must roll. Backlash must ensue.
But that will take a sea change in political climate: a new administration, one
willing to tune into the reality channel on patents. In the meantime,
prosecutors suffer the indignities of spurious rejection as inventors' dreams of
patent protection are strangled in the womb.

Comments

Another problem that we have is literacy. In patent prosecution, words have meaning. It is not an overstatement to suggest that this is more true for patent prosecution than in any other field of law, or field of endeavor generally. Claim interpretation is paramount, and word selection can be crucial. Interpretation of what the words of a reference may disclose and suggest is also crucial in patent prosecution.

Having said that, it is incomprehensible that we have as many English-as-Second-Language examiners as we do. This should not be interpreted as some sort of xenophobia -- it is not intended as such (indeed, I am afraid we have many native English speakers that are also not sufficiently literate -- both on the examiner side and also on the patent attorney side). But I have exactly no business interpreting claim language in my second language, no matter how fluent. In the field of patent prosecution and examination, however, the meanings of words is all that we have.

Indeed, unless you love "words" and their meanings and their connotations, this is not the business for you to be in. On either side of the issue.

I have no idea how to address this. Perhaps some sort of advanced fluency exam to be taken by both native English speakers and non-native speakers. But I'm not even sure if that is enough.

Posted by: pikkumatti at January 14, 2008 3:02 PM

I say the PTO need to increase its intake of electrolytes. Hey PTO, try drinking more Brawno.

Posted by: anananon at January 14, 2008 3:15 PM

pikkumatti makes an excellent point.

With Japanese as a second language, my experience is that reading is much easier than composition/writing. So, badly written rejections are somewhat excusable, given the circumstances of the examiners corps now being something of a foreign legion, but not the inane rejections in the first place, followed up with bullheaded insistence.

The reason the PTO is staffed to the gills by foreign-born examiners with bad communication expression is precisely because of the lack of language skill: they can't get an equivalent job in the private sector.

Though the years, I've had numerous former examiners apply to work for Patent Hawk. Consistently the non-starter was inadequate English.

So, many examiners are stuck: they can't escape the PTO without suffering economic or prestige loss, and they know it. That's a formula for playing along with whatever management wants.

I remember a kinder, gentler time when examiners and prosecutors worked together for the common goal of achieving defensible but broad patent claims and subjecting the claims to the closest reasonable art available. That was to the inventor's benefit as well as to the public's benefit.

Now patent prosecution is like a war zone. Waterboarding of inventors is acceptable conduct among the examining corps. Where have all the flowers gone?

Posted by: step back at January 15, 2008 2:48 AM

Kettle to pot: you're all black.

Are we whining patent prosecutors beyond blame here? We are, after all, the only ones who can explain to the politicians and the public how outrageous this system has become. But the effort required lies outside the billable hours. In fact, the present system benefits the prosecutor's bottom line by requiring more arguments, more OA's, more appeals, and I suspect many prosecutors/firms are happy about that. Some worry that any public expression of discontent will come back to haunt them in the form of a pi$$ed off examiner or, worse, by some OED goon with a hair-trigger.

Tell me what patent prosecutor's professional organization gets in the face of the PTO. Tell me what organization keeps a list of incompetent or malicious examiners, or at least a list of complaints about examiners. What organization is demanding an office of the ombudsman be set up to investigate examiner incompetence? What organization is willing to flex some muscle on behalf of the system, which is to say the client? I'll send them some money. And why aren't some of these practitioners turned academics writing an expose' on this mess?

Pot to kettle: You, too.

Posted by: BabelBoy at January 15, 2008 9:18 AM

BabelBoy,

I'm sure you've read the many letters to Congress re: patent reform from the various patent professional organizations, eg. AIPLA, IPO, etc. Likewise to the PTO as to comments on the new rules...they all fall on deaf ears. There is money being spent, but not in comparison to what Microsoft and their ilk are dumping into their side.

I think even law firm practitioners realize there's a limit to how long they can continue to prosecute applications without allowances forthcoming. Clients have limited funding, and no matter how much the PTO examiners trivialize the cost of their oversights, there's a law of diminishing returns. Even within my corporation I've counseled my clients to file fewer applications, especially the close ones (which are many) that are unlikely to grant under the KSR criteria. Sooner or later they'll begin to listen to me.

Finally, in many ways, it's unfair to blame the examiners for their transgressions, as it's become crystal clear that writing and maintaining specious rejections has become the modus operendii of, to coin a phrase, patent office (mis)management.

Posted by: bierbelly at January 15, 2008 9:46 AM

"I remember a kinder, gentler time when examiners and prosecutors worked together for the common goal of achieving defensible but broad patent claims"

How? Imagine if this was any other government-private attorney context where the goal of the government agency was to give the special interest what they wanted within the broadest possible limits:

1. "I remember a kinder, gentler time when tax auditors and tax lawyers worked together for the common goal of achieving defensible but low tax liability for companies that could afford lawyers."

2. "I remember a kinder, gentler time when the SEC and defense lawyers worked together for the common goal of achieving defensible but useless disclosures to the investing public."

3. "I remember a kinder, gentler time when the FTC and antitrust lawyers worked together for the common goal of achieving defensible but broad monopolies."

The PTO is supposed to be the guardians of the public interest. Patent lawyers are paid to serve their clients. The process is supposed to be adversarial. If examiners and prosecutors are working toward a "common goal," one side is not doing their job.

Posted by: TJ at January 15, 2008 12:11 PM

"The process is supposed to be adversarial. If examiners and prosecutors are working toward a "common goal," one side is not doing their job."

TJ,

With all due respect, that assertion is plain wrong.

Patent prosecution proceedings at the USPTO are "Ex Parte" --meaning only one party is present. They are not intended to be adversarial. Nowhere in the patent statutes does it say that the examiner's job is to be a mean spirited SOB and to deny the inventor as much of his/her rights as possible. It is in the public interest to "secure" for inventors the exclusive rights in their respective discoveries in order to promote the progress of the useful arts. Please re-read your US Constitution. If examiners are working overtime to unsecure the inventor's rights, they are violating the supreme law of the land, the US Constitution.

TJ writes "The process is supposed to be adversarial". There's the root of your problem, USA. Two out of three of the world's top Patent Offices are NOT caged in this toxic "adversarial" world, and NOT beset by the problems drowning the USPTO. For an American, whether nation, individual or corporate person, the "adversary" is (and always has been) everybody else. Meanwhile, everywhere else in the world, Applicant and Examiner share a quest for issue of something with enough dignity to withstand all post-issue validity attacks. In ROW, nobody gives any deference to the pre-issue work of the PTO Exr. Except in USA, validity is blown away on the mere balance of probability. When the adversary of the patent owner puts validity in issue, it calls into equal question the competence of both the Examiner and the prosecuting attorney. Attorney and Examiner thus share a common interest, in seeing post-issue validity attacks fail. There's the solution to your problem.

Posted by: MaxDrei at January 15, 2008 2:04 PM

step back:

Your reliance on the "entitled" language is pure rhetoric devoid of substance. People are also "entitled" to tax refunds, to form companies, and to merge with other companies. And all of the proceedings I raised (IRS audits, SEC approvals, and FTC approvals) are "ex parte" no less than PTO proceedings.

Patent examiners are there to make sure that patent applicants are not claiming more than they invent. Patent applicants have every incentive to attempt to do that, and their lawyers have every incentive to help their paymasters. If you can't see why patent examiners should be working for a different set of interests and thus positioned in an adversarial role, then our problem is your lack of perception, not my failure to read the statute.

Posted by: TJ at January 15, 2008 4:46 PM

So, now I know it, from TJ. The system designates as the mission of a patent lawyer to inveigle out of the PTO a protective scope "wider" than what his client has truly contributed to the art. How many readers share that view? How many readers think that attitude makes the US patent system fit for purpose?

Posted by: MaxDrei at January 15, 2008 10:57 PM

TJ, you clearly work for Dudas. The point of examination is not only to make sure the applicant doesn't get more than he deserves, but also to make sure that the applicant doesn't get LESS than he deserves. Dudas et al (and you too, evidently) only look at the first part, but it's the second part that drives industry and innovation.

Posted by: B*U*L*L*S*H*I*T at January 15, 2008 11:06 PM

MaxDrei, I've said it before in other fora, I view my job as getting my client the widest possible protection *to which he is entitled* under the statute. It does no one any good for me to obtain for him more than he deserves. Most of my colleagues share this view, although as evidenced by TJ, not all do.

Posted by: DJF at January 15, 2008 11:10 PM

The presumption of validity breeds attorneys like TJ. Quite why ex Parte examination should give rise to such a presumption is beyond me, especially when there are attorneys like TJ around, doing all they can to drive the scope as far beyond what is proper as they can. Note how TJ's "adversarial" relationship with the Exr is asymmetric. He can push beyond the line as much as he likes, but the Examiner is not allowed to push him to anything narrower than the line. However, Newton wrote something about forces having opposite reactions. Looks to me as if the Exrs are now reacting, and moronically pushing back. But that's a rational response to TJ, isn't it?

Does anybody know whether TJ plays football in his free time. Does he spend the entire game in an "adversarial" relationship with the referee?

Posted by: MaxDrei at January 16, 2008 2:54 AM

"The presumption of validity breeds attorneys like TJ."

Max,

That's not fair. For some here in America, the words in the US Constitution and the words in the patent statutes, etc. are just unintelligible smears of ink on paper. Never mind what the words say, let's invoke our worst animal instincts and kill and destroy everyone around who appears not to be fully "with us" and therefore must be wholly "against us" (to quote our esteemed president's false choice menu options).

TJ regretfully appears to be of that camp. He wants all government agencies to operate like dispassionate tyrants (like the IRS). I feel sorry for him and for the rest of us if he gets what he wishes for.

On the other hand, there are others in America who believe in the lofty goals set forth in the US Constitution. In other words that we are here to build a more perfect union and to secure liberties for ourselves and our posterity. In other words that we are here to promote the progress of science and the useful arts by "securing" for inventors the exclusive rights in their respective discoveries.

Just as you'll find all kinds of lawyers/ patent agents here on this side of the pond with different political leanings; you'll also find all kinds of patent examiners and judges. Some honor the law and try to do what's right. Others enjoy absolute abuse of unfettered power and like to show it on a daily basis. The "presumption of validity" has nothing to do with how they chose to act badly and irresponsibly all in the name of acquiring ever more money and ever greater power.

Although patent prosecution in the U. S. is ex parte I have to say that it is, inherently, somewhat adversarial. To be strictly ex parte the examination would rely strictly on the application and materials supplied by the applicant; basically the examiner saying yea or nay, with, of course some right of appeal.

However, given that 35 USC 102 begins "A person shall be entitled to a patent unless—" and the fact that (at least at the moment) the Office bears the principal burden of establishing such facts needed to trigger the "unless" ( and thus classifying the system as "examination" vice "registration") the scheme necessarily has an adversarial flavor. This is necessary since the examiner needs to be "incentivized" to actively seek out such facts ( practially speaking the various forms of "printed publications" listed in section 102), since, otherwise, the process will pump out many patents that will have little or no validity when exposed to ravages of determined opponents.

I also agree, to an extent, that the examiner represents everyone else than the applicant, both the general public and prospective infringers. Nevertheless the process is not fully aversarial and the Office should not, IMHO, act as if representing a client thoroughly hostile to the interests of the applicant. To the extent possible it ought to be as objective as possible, but it must be recognized that often only a vague approximation to this state is achieved, if ever.

Posted by: Gratefully Ex Examiner at January 16, 2008 5:15 AM

If indeed it is adversarial, I should have a right under traditional notions of fair play to cross examine the examiner as a hostile witness.

Posted by: step back at January 16, 2008 9:03 AM

Step Back, I still have a problem. Your professional duty to your client is to get the widest claims. If you can get more than what's sustainable before a neutral and technically expert court, where the validity attacker needs only a preponderance of evidence, you must go for it, because the presumption of validity and the deference to the Exr decisions allows that unsustainable claim nevertheless to intimidate the industry. Where I practise, I can explain to my client why over-reaching is counter-productive. Can you do that? Otherwise, I agree with you: my US patent attorney clients are all honorable men and women.

Posted by: MaxDrei at January 16, 2008 10:06 AM

Max,

That "if" you mention is a big one. "If" one can get more that what's sustainable, then arguably the patentee is entitled to it. "If" its not "sustainable", it will likely be overturned in court. Industry is not often "intimidated" if there's big money to be made. If not, it's a moot point. Who really cares if someone obtains a patent on swinging sideways? Where's the money in that?

Posted by: bierbelly at January 16, 2008 11:14 AM

Bierbelly I'm not thinking garden swings. I'm remembering Blackberry. On the proposition that the claim asserted will be found, in the end, to be invalid, the commentators were still mystified why the CEO didn't just pay the demanded USD 600m, thereby to dispose of the business uncertainty. Isn't that case all the incentive PTO Applicants need, to push unsustainable claims to issue? "Overturned in court" you write. When would that be then? "Entitled" to the right to exclude what's inside an invalid claim? That would be the public then, would it, who is choosing to give to the owner of the invalid claim the right to exclude it from the claimed area? "Arguably" you say? Would you care to present that argument?

Don't be so sure the re-exam is going to invalidate NTP's claims. Their appeal and reply briefs are pretty good.

Posted by: DJ at January 16, 2008 2:27 PM

Many thanks DJ. I didn't know either of those points. I read the blogs to keep myself better informed. Makes one happy to be a patent attorney eh. No danger of running out of work, just as long as patent law remains deliciously complex, and as long as businessmen have crucial decisions to make.